Laird Technologies, Inc.v.GrafTech International Holdings Inc.

Patent Trial and Appeal Board

Mar 25, 2015

10722364 (P.T.A.B. Mar. 25, 2015)

Trials@uspto.gov Paper 46
Tel: 571-272-7822 Entered: March 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

LAIRD TECHNOLOGIES, INC.,
Petitioner,

v.

GRAFTECH INTERNATIONAL HOLDINGS, INC.,
Patent Owner.
_______________

Case IPR2014-00024
Patent 6,982,874 B2
_______________

Before BRIAN J. McNAMARA, BARRY L. GROSSMAN, and
J. JOHN LEE, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Laird Technologies, Inc. (“Petitioner”) filed a Corrected Petition
requesting an inter partes review of claims 1–20 of U.S. Patent No.
6,982,874 B2 (“the ’874 patent”). Paper 7 (“Pet.”). On March 26, 2014, we
instituted an inter partes review under 35 U.S.C. § 103 for obviousness of:
A. claims 1, 4, 5, 10, 11, 14, 15 and 20 over Norley (Ex. 1021),
Tzeng ’520 (Ex. 1004), and Mercuri (Ex. 1023);
B. claims 2, 3, 8, 9, 12, 13, 18, and 19 over Norley, Tzeng ’520,
Mercuri, and Richey (Ex. 1018);
C. claims 6 and 16 over Norley, Tzeng ’520, Mercuri, and Tzeng
’076 (Ex. 1020); and
D. claims 7 and 17 over Norley, Tzeng ’520, Mercuri, Tzeng ’076,
and the Kapton Website (Ex. 1017).
See Decision on Institution of Inter Partes Review, Paper 11 (“Dec. to
Inst.”).
GrafTech International Holdings, Inc. (“Patent Owner”) filed a
Confidential Patent Owner Response (Paper 22, “Confidential PO. Resp.”)
and a Redacted Patent Owner Response (Paper 21, “Redacted PO Resp.”).
Petitioner filed a Reply (Paper 29, “Reply”).
We granted Patent Owner’s motion to seal Exhibits 2034–2040, 2047,
2053–2063, and 2074–2091 (collectively, the “Sealed Exhibits”) and
portions of the Patent Owner Response. Paper 28.
Patent Owner did not file a motion to amend the claims.
Also before us is Patent Owner’s Motion to Exclude Evidence (Paper
34, “Mot. Excl.”), Petitioner’s Opposition to the Motion (Paper 39, “Resp. to
Mot. Excl.”), and Patent Owner’s Reply (Paper 41, “Reply Mot. To Excl.”);
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as well as Patent Owner’s Observations on the Cross Examination of
Richard Feinberg (Paper 35), and Petitioner’s Response to Patent Owner’s
Observations (Paper 38).
An oral hearing was held on December 15, 2014. A transcript of the
hearing is included in the record. Paper 45 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine Petitioner has shown by a
preponderance of the evidence that claims 1–20 are unpatentable.
A. The ’874 patent
The challenged claims of the ’874 patent relate generally to a heat
dissipating and heat shielding system for an electronic device. Ex. 1001,
col. 3, ll. 61–64; see also claim 1, col. 16, ll. 32–33 (“A thermal dissipation
and shielding system for an electronic device”). The system uses a “thermal
solution” to provide the heat dissipating and heat shielding functions. Id.
The “inventive thermal solution” is an anisotropic sheet of compressed
particle of exfoliated graphite (also referred as “flexible graphite”). Id. at
col. 3, ll. 64–67. Compressed particles of exfoliated graphite are referred to
generally by the acronym “CPEG.” Redacted PO Resp. 1.
Anisotropic materials preferentially transfer heat in selected
directions. Ex. 1001, col. 2, ll. 9–11. The thermal anisotropy of a material
is defined by the material’s in-plane and through-plane thermal
conductivities. Ex. 2005 ¶ 70. As shown in the figures below, “in-plane”
refers to the “a” direction and runs along the length of the material; through-
plane (sometimes referred to as through-thickness) refers to the “c” direction
and runs perpendicular to the plane.
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Illustration from Ex. 2005 ¶ 70 showing
“c-direction” through plane and
“a-direction” in-plane thermal conductivity.
To be anisotropic with regard to thermal conductivity, a material’s through-
plane and in-plane thermal conductivities must be different. Id. ¶ 71. If they
were the same, the material would be thermally isotropic. Id.; see Ex. 1001,
col. 13, ll. 30–37.
As explained in the ’874 patent, the claimed heat dissipation and
shielding system dissipates heat from an electronic component while
simultaneously shielding a user or adjacent components from the effects of
the heat generated by the component. Ex. 1001, col. 3, ll. 61–64. In other
words, in a practical context, the “thermal solution”—an anisotropic CPEG
sheet—dissipates and shields heat to protect your hand from getting hot
while holding your mobile phone and also to protect adjacent components
within the phone.
In a preferred form, the anisotropic CPEG sheet employed as the
thermal solution in the ’874 patent has an in-plane thermal conductivity
substantially higher than its through-plane thermal conductivity. Ex. 1001,
col. 4, ll. 2–5. Preferably, the anisotropic CPEG sheet has a thermal
anisotropic ratio on the order of 10 or greater. Id. at col. 4, ll. 5–7. The
thermal anisotropic ratio is the ratio of in-plane thermal conductivity to
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through-plane thermal conductivity. Id. at col. 4, ll. 8–9. Different
applications require, or benefit from, different levels of thermal conductivity
and thermal conductivity ratios. Ex. 2005 ¶ 74.
Anisotropic CPEG sheets are well-known in the prior art. Redacted
PO Resp. 6 (citing Ex. 1004); see also Ex. 1001, col. 7, ll. 18–20 (citing U.S.
Patent No. 3,404,061 (“Shane”), which is Ex. 1013 in this proceeding).
Shane is incorporated by reference into the ’874 patent. Ex. 1001, col. 7,
ll. 18–20.
B. Exemplary Claim
Claims 1 and 11 of the ’874 patent are independent claims. Both
challenged independent claims are directed to a thermal dissipating and
shielding system. Claim 1, shown below, is illustrative:
1. A thermal dissipation and shielding system for an
electronic device, comprising:
an electronic device comprising a first component
which comprises a heat source, wherein the first
component transmits heat to an external surface of the
electronic device;
a thermal solution comprising two major surfaces, the
thermal solution positioned such that one of its major
surfaces is in operative contact with the first component
such that it is interposed between the first component and
the external surface of the electronic device,
wherein the thermal solution comprises at least one
sheet of compressed particles of exfoliated graphite which
thermally shields the external surface of the electronic
device from heat generated by the first component.
Independent claim 11 is similar to claim 1, but also requires a “second
component,” and further requires the CPEG sheet to be interposed between
the first component and the second component.
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C. Scope and Content of the Prior Art
We summarize below the prior art, including the primary references
asserted by Petitioner.
1. Shane (Exhibit 1013)
Shane issued on October 1, 1968, based on an application filed on
April 15, 1963. Shane is prior art under 35 U.S.C. § 102(b).
Shane is not a reference applied by Petitioner against the claims to
establish unpatentability. Shane, however, is an important and substantive
piece of admitted prior art that establishes the basic characteristics of the
CPEG material used in the claimed invention and known in the art. Shane
provides a “roadmap” of how to use CPEG. Dec. to Inst. 9; see Redacted
PO Resp. 37.
Shane discloses a flexible sheet material that consists essentially of
graphite, which possesses anisotropic, or highly directional, properties.
Ex. 1013, col. 1, ll. 10–19; see also Redacted PO Resp. 46 (“Shane does
disclose a process for producing CPEG sheet material and does discuss the
anisotropic thermal properties of a CPEG sheet.”). The graphite sheet in
Shane has “excellent flexibility” and “good strength.” Id. at col. 4, l. 46.
The graphite sheet can be “pure graphite free of any binders,” or,
alternatively, “additives, suitable organic and inorganic materials, can be
incorporated therein so as to modify the nature or properties thereof.” Id. at
col. 13, ll. 56–59.
Consistent with the very nature of anisotropic CPEG, and as explained
in Shane, CPEG functions simultaneously as a thermal conductor (in the “a
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direction”) and as a thermal insulator (in the “c direction”).
1
Id. at col. 13,
ll. 2–11; see also id. at col. 13, ll. 44–46 (“For example, the graphite
material can be used as an insulating material and/or as a thermal conductive
material”) (emphases added).
Shane discloses “[t]he supple graphite sheet material can be provided
with a uniform thickness . . . of . . . about 0.0001 inch (0.1 mil)” and can be
used as an insulating barrier “in a very small space.” Ex. 1013, col. 13,
ll. 16–21, 31–36. Shane also discloses that the degree of anisotropy
increases with increasing density; the greater the density, the greater the
degree of anisotropy possessed by the flexible graphite sheet material. Id. at
col. 4, ll. 65–69. The graphite sheet disclosed in Shane “possesses either
low or high thermal conductivity, dependent upon the orientation.” Id. at
col. 13, ll. 10–11 (emphasis added). It also has “excellent thermal insulating
properties from the cryogenic range up to 6700 °F.” Id. at col. 13, ll. 18–19
(emphasis added). Shane concludes that a “very effective insulating barrier
is thus available in a very small space.” Id. at col. 13, ll. 19–21.
With disclosed uses as an insulating material and/or as a thermal
conductive material (Ex. 1013, col. 13, ll. 2–11, 43–46), Shane discloses that
the anisotropic properties of a CPEG sheet allow it to be used for
simultaneously dissipating or conducting the heat away from a heat source,
and for protecting, insulating, or shielding elements from a heat source.
Patent Owner admits that Shane discloses the anisotropic thermal
properties of CPEG sheets. Redacted PO Resp. 37. Patent Owner also

1
“In the anisotropic, flexible graphite sheet material, the c direction is the
direction perpendicular to the surface plane, that is, the thickness direction
and the a directions are the directions along the surface plane, that is, the
width and length directions.” Ex. 1013, col. 13, ll. 2–6.
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admits that, in view of these anisotropic properties, Shane discloses that
CPEG sheets “can be employed as either a thermal conductor or a thermal
insulator.” Id. Thus, there is no dispute that Shane “teaches a person skilled
in the art about CPEG sheet, its basic properties, and methods by which it
can be made.” Redacted PO Resp. 37. Dr. Richard Culham, Patent Owner’s
declarant, essentially repeats Patent Owner’s assertions. Ex. 2005 ¶ 148.
Dr. Culham opines, however, that Shane does not teach or suggest to a
person skilled in the art that a CPEG sheet could be employed as an
apparatus that simultaneously provides thermal dissipation and thermal
shielding within an electronic device. Id. ¶¶ 149, 153.
2. Norley (Ex. 1021)
Norley is a published article titled “The Development of a Natural
Graphite Heat-Spreader.” Norley states, “[t]he ongoing need for
miniaturization and speed in the electronics industry has brought about a
requirement for better performing thermal management systems.” Ex. 1021,
1. Norley discloses using a naturally occurring graphite material “with high
thermal conductivity to dissipate heat.” Id. Norley also discloses “a high
degree of thermal anisotropy” reduces temperature gradients and increases
heat transfer (id.), thus recognizing both the heat dissipating and heat
shielding properties of a thermally anisotropic material. Norley also
discloses that graphite exhibits structural anisotropy and possesses many
properties that are highly directional, e.g., thermal and electrical
conductivity. Id. Additionally, Norley recognizes that natural graphites
possess a very high degree of structural anisotropy, which make them ideal
starting materials for heat-spreader components. Id.
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In one example, Norley discloses a graphite material with substantial
thermal anisotropy. Id. at 2. The in-plane thermal conductivity is
230 W/m-K, compared to 4.5 W/m-K through the thickness of the laminate.
Id. As Norley points out, this yields a thermal anisotropy ratio of 52 and
allows for directional control of heat flow for applications in which this is
desired. Id.
Norley also discloses that the ratio of the in-plane to through-plane
thermal conductivity can be varied through processing changes, allowing
one “to produce a material in which the relative amounts of heat flowing in
different directions can be controlled.” Id. at 3–4.
The Norley Article concludes by noting that anisotropic natural
graphite-based materials, with a ratio of in-plane to through-plane thermal
conductivity typically ranging from 5 to 50, provide thermal engineers with
the ability to control the anisotropy of these materials, the flexibility to
channel heat in a preferred direction, and new design options that can reduce
thermal failures in electronic devices. Id. at 4.
3. Tzeng ’520 (Exhibit 1004)
U.S. Patent No. 6,482,520 (“Tzeng ’520”) discloses the use of CPEG
sheets to dissipate heat from microprocessors, integrated circuits and other
sophisticated electronic components. Ex. 1004, col. 1, ll. 20–27, col. 5, ll.
23–34. As Tzeng ’520 notes, the excessive heat generated during operation
of these components can not only harm their own performance, but can also
degrade the performance and reliability of the overall system, and may cause
system failure. Id. Tzeng ’520 also recognizes that “both performance
reliability and life expectancy of electronic equipment are inversely related
to the component temperature of the equipment.” Id. at col. 1, ll. 34–37.
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Thus, Tzeng ’520 recognizes that the heat generating microprocessor or
integrated circuit, to which the disclosure is directed specifically, is used in a
system with other components.
Tzeng ’520 emphasizes the heat dissipating properties of CPEG but
also refers to CPEG’s inherent heat shielding properties. Tzeng ’520
discloses:
the thermal conductivity of thermal interface 20 is
significantly greater in the “a” direction (the direction
parallel to the crystalline planes of the graphite, or along
the surface of the flexible graphite sheet) than in the “c”
direction (the direction perpendicular to the crystalline
planes of the graphite, or transverse to the flexible graphite
sheet), often by a factor of 20 times or greater. Thus,
when thermal interface 20 is arrayed or mounted on
external surface 100a of electronic component 100 such
that one of its planar surfaces 20a sits against external
surface 100a, as shown in FIGS. 1 and 2, heat generated
by or from electronic component 100 spreads about the
planar surfaces 20a and 20b of thermal interface 20, not
just directly through thermal interface 20 in the “c”
direction.
Ex. 1004, col. 7, ll. 47–60. Thus, the diminished thermal conductivity in the
“c” direction provides, in effect, thermal shielding or thermal protection in
the “c” direction.
According to Patent Owner, “Tzeng ’520 does an excellent job of
describing compressed particles of exfoliated natural graphite (‘CPEG’) and
how it is made.” Redacted PO Resp. 6. “Tzeng ’520 explains that the
orientation in certain graphites results in an anisotropic structure and also
explains how the spacing between the carbon layers can be opened and
expanded in the ‘c’ direction and that the expanded graphite structure is
referred to as exfoliated or intumesced graphite.” Id. at 6–7.
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4. Mercuri (Ex. 1023)
European Patent Specification EP 0988261 B1 (“Mercuri”) discloses a
graphite material used to protect against thermal damage. Ex. 1023, col. 1,
ll. 5–14. Mercuri discloses how “highly anisotropic thermal conductivity
characteristics of roll-pressed flexible graphite are employed in addressing
high temperature shielding applications.” Ex. 1023, col. 4, ll. 51–54
(emphasis added).
D. Level of Ordinary Skill
Petitioner relies on the Declaration of William Bagot (Ex. 1012) to
assert that a person of ordinary skill in the art would have had a Bachelor of
Science degree in materials science (or similar engineering discipline,
including thermal engineering), and five or more years of experience in the
field of the management of heat in electronic devices using flexible graphite
sheets. Pet. 18 (citing Ex. 1012 ¶ 18).
2

Patent Owner relies on the Declaration of Richard Culham, Ph.D. (Ex.
2005) to assert a level of ordinary skill in the art that differs slightly from

2
Mr. Bagot has significant work experience in the field of materials science,
including graphite materials, and in systems and devices for managing heat
in electronic devices. Ex. 1012 ¶¶ 7–16. We are satisfied that based on his
knowledge, skill, experience, training, and education, he may testify on this
issue and on other matters in his Declaration in the form of an opinion. See
Fed. R. Evid. 702.
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that asserted by Petitioner.
3
Redacted PO Resp. 18 (citing Ex. 2005 ¶¶ 122–
125). In Dr. Culham’s opinion, a person of ordinary skill in the art in the
field of the ’874 patent would be one with at least a Bachelor’s degree in an
engineering discipline (such as mechanical engineering or electrical
engineering) or an applied physics discipline, and at least three to five years
of experience with thermal management. Ex. 2005 ¶ 123. Dr. Culham
states that the patentability of the challenged claims does not depend on
whether Petitioner’s or Patent Owner’s asserted definition is used. Id. ¶ 125.
We agree with Dr. Culham that the differences with the position asserted by
Petitioner are slight, and, in our view, insignificant in resolving the issue of
the patentability of the challenged claims.
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
re Cuozzo Speed Technologies LLC, No. 2014-1301, 2015 WL 448667, at
*5–*8 (Fed. Cir. Feb. 4, 2015) (“Congress implicitly adopted the broadest
reasonable interpretation standard in enacting the AIA,” and “the standard
was properly adopted by PTO regulation.”); Office Patent Trial Practice

3
Dr. Culham has nearly 30 years of expertise in modeling, characterization,
and development of components and materials related to thermal
management of micro and nanoscale devices. Ex. 2005 ¶¶ 7–17. He is a
Full Professor in the Department of Mechanical and Mechatronics
Engineering at the University of Waterloo in Waterloo, Ontario, Canada. Id.
¶ 8. We are satisfied that based on his knowledge, skill, experience,
training, and education, he may testify on this issue and on other matters in
his Declaration in the form of an opinion. See Fed. R. Evid. 702.
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Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim terms also are
given their ordinary and customary meaning, as would be understood by one
of ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If an inventor
acts as his or her own lexicographer, the definition must be set forth in the
specification with reasonable clarity, deliberateness, and precision.
Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed.
Cir. 1998). If a feature is not necessary to give meaning to what the inventor
means by a claim term, it would be “extraneous” and should not be read into
the claim. Id.; E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co.,
849 F.2d 1430, 1433 (Fed. Cir. 1988); see also Specialty Composites v.
Cabot Corp., 845 F.2d 981, 987 (Fed. Cir. 1988) (“Where a specification
does not require a limitation, that limitation should not be read from the
specification into the claims.”).
Petitioner does not assert any specific claim construction. Pet. 18–19.
Petitioner recommends that we “should not construe the terms, as doing so
would be offering an advisory opinion regarding the scope of those terms.”
Reply 10.
Patent Owner submits that five phrases from the challenged claims of
the ’874 patent should be construed: (1) “thermal dissipation”; (2) “thermal
shielding”; (3) “thermal dissipation and shielding system”; (4) “heat source”;
and (5) “sheet of compressed particles of exfoliated graphite.” Redacted PO
Resp. 19–20.
We construe the proposed terms to avoid any ambiguity in their
meaning, and to establish both what the claims mean and what they do not
mean.
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1. Thermal Dissipation
The phrase “thermal dissipation” is in the preamble of independent
claims 1 and 11 (“A thermal dissipation and shielding system”). We note, to
avoid any confusion, that the claims also use the phrase “heat dissipation.”
See, e.g., Ex. 1001, claim 2 (“The system of claim 1, wherein the electronic
device further comprises a heat dissipation device . . . .”).
Patent Owner proposes that the broadest reasonable interpretation of
the phrase “thermal dissipation” as used in the ’874 Patent is “the removal of
heat from an electronic component by distributing the component’s heat
over an increased area and/or volume and ultimately removing the heat by
convection into the surrounding environment, such as the air.” Redacted PO
Resp. 19 (citing Ex. 2005 ¶¶ 127–131; Ex. 1001, col. 3, ll. 61–62, col. 14, ll.
35–39, col. 15, ll. 6–8).
Dr. Culham states that the ’874 patent “does not specifically define
this phrase.” Ex. 2005 ¶ 127.
The Specification states that the “thermal solution,” that is the CPEG
sheet, “spreads the heat from [the] heat source.” Ex. 1001, col. 14, ll. 35–39.
Dr. Culham states that this is a description of “how heat dissipation
apparatuses operate.” Ex. 2005 ¶ 129.
Patent Owner’s proposed interpretation brings in extraneous factors
into the proposed definition. Considered in its broadest sense, the phrase
“thermal dissipation” is not limited to electronic components, distributing
heat over an increased area and/or volume, or removing heat by convection
into the surrounding environment, as proposed by Patent Owner.
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Accordingly, the broadest reasonable construction in light of the
Specification of the ’874 patent of the phrase “thermal dissipation” is
spreading heat from a heat source.
2. Thermal Shielding
The phrase “thermal shielding” also is in the preamble of independent
claims 1 and 11 (“A thermal dissipation and shielding system”).
Although neither party proposed any specific claim construction, in
our Decision to Institute, we adopted a construction for the phrase “thermal
shields” or “thermal shielding.” Dec. 6–7.
Patent Owner “submits that the definition in our Decision to Institute
4

is somewhat incomplete as it fails to take into account the description of
thermal shielding from the specification and the accepted definition of a
thermal shield within the art.” Redacted PO Resp. 19. According to Patent
Owner, the disclosure of the ’874 patent “demonstrates that thermal
shielding is protection of a portion of the device other than the heat source
itself from heat generated by a heat source.” Id. (citing Ex. 2005 ¶¶ 135–
37). This proposed definition incorporates too much of the Specification to
be the broadest reasonable interpretation of this phrase as used in the claims.
The claims refer to a “shielding system” and recite a CPEG sheet that
“thermally shields” devices or components from a heat source. See, e.g., Ex.
1001, claim 1 (“wherein the thermal solution comprises at least one sheet of
compressed particles of exfoliated graphite which thermally shields the
external surface of the electronic device from heat generated by the first

4
“the broadest reasonable construction in light of the Specification of the
claim term ‘thermally shields’ or ‘thermal shielding’ is any structure that
protects against heat.” Dec. to Inst. 8.
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component”) (emphases added). Thus, the claim language recites that the
CPEG sheet shields a portion of the device from the heat source. Patent
Owner proposes that we add into the claim the additional limitation that the
thermal shielding does not shield the heat source itself.
Neither party directs us to any unique definition in the Specification
of the word “shield” or its grammatical variants, nor do the parties direct us
to any statements in the Specification or during prosecution where the
patentee disavowed the full scope of the claim terms “shields” or
“shielding.” We are not directed to any persuasive disclosure in the
Specification that supports Patent Owner’s proposed construction.
If the specification does not assign or suggest a particular definition to
a claim term, it is appropriate to consult a dictionary definition of the word
for guidance in determining the ordinary and customary meaning of the
claim term as viewed by a person of ordinary skill in the art. Comaper
Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010); see also
Starhome GmbH v. AT&T Mobility LLC, 743 F.3d 849, 856 (Fed. Cir. 2014)
(“We have made clear that dictionaries and treatises can often be useful in
claim construction.”).
A common dictionary definition of the word “shield” is “to cover and
protect.”
5

Accordingly, the broadest reasonable construction in light of the
Specification of the claim term “thermal shields” or “thermal shielding,” or
its grammatical variants, is a structure that protects against heat.

5
“Shield,” Merriam-Webster.com, at http://www.merriam-
webster.com/dictionary/shield (accessed Feb. 25, 2014).
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3. Thermal Dissipation and Shielding System
The phrase “thermal dissipation and shielding system” appears only in
the preamble of independent claims 1 and 11.
Patent Owner proposes that the “broadest reasonable interpretation of
a ‘thermal dissipation and shielding system’ is a system that simultaneously
accomplishes thermal dissipation from a heat source and thermal shielding
of an adjacent structure, such as a second component or external surface of
the device, from the heat generated by that heat source.” Redacted PO Resp.
20. Patent Owner incorporates more than is necessary in its proposed
definition. For example, we have not been directed to anything in the
Specification that requires a construction limited to shielding adjacent
structures.
Accordingly, the broadest reasonable construction in light of the
Specification of the ’874 patent of the phrase “thermal dissipation and
shielding system” is a system that dissipates and shields heat, consistent with
our constructions of “thermal dissipation” and “thermal shielding” discussed
above.
4. Heat Source
Patent Owner proposes that the broadest reasonable interpretation of
the phrase “heat source” is “any component within an electronic device that
generates heat.” Redacted PO Resp. 20.
Patent Owner cites portions of the claims to support the proposed
construction. Id. Patent Owner also cites Dr. Culham’s Declaration. Id.
Dr. Culham refers to examples of a heat source mentioned in the
Specification. Ex. 2005 ¶ 142. Because the examples mentioned include
components that may be within an electronic device, such as hard drives and
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microprocessors, Dr. Culham concludes that the definition of “heat source”
should be limited to being within an electronic device. We are not
persuaded that there is any basis for incorporating unnecessary limitations
from the Specification into the construction of the phrase “heat source.”
When describing the invention in the Abstract, for example, the
Specification states that a thermal solution for an electronic device may be
positioned between a heat source and an external surface of the electronic
device, where the thermal solution facilitates heat dissipation from the heat
source while shielding the external surface from the heat generated by the
heat source. Ex. 1001, Abstract. This description does not require the heat
source to be within the electronic device.
Accordingly, the broadest reasonable construction in light of the
Specification of the ’874 patent of the phrase “heat source” simply is a
source of heat.
6

5. Sheet of Compressed Particles of Exfoliated Graphite
Patent Owner proposes that the broadest reasonable interpretation of
the phrase “sheet of compressed particles of exfoliated graphite” is a
“graphite sheet formed of compressed particles of exfoliated natural
graphite.” Redacted PO Resp. 20 (emphasis added). Essentially, the Patent
Owner wants to add the word “natural” into the claims. Patent Owner cites
to claims 1 and 11 for support, but the cited passages do not contain any
reference to the word “natural” when referring to the claimed graphite

6
“These are ordinary, simple English words whose meaning is clear and
unquestionable. There is no indication that their use in this particular
conjunction changes their meaning. They mean exactly what they say.”
Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373 (Fed. Cir.
2004).
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material. Patent Owner also cites for support the Declaration of Dr. Culham.
Id. Dr. Culham states that the “specification provides a detailed description
of the type of material” used for the CPEG sheet, generally citing three
columns of text from the Specification. Ex. 2005 ¶ 143.
Concerning the type of graphite used in the disclosed system, the
Specification states that “[g]raphite starting materials suitable for use in the
present invention include highly graphitic carbonaceous materials capable
of intercalating organic and inorganic acids as well as halogens and then
expanding when exposed to heat.” Ex. 1001, col. 6, ll. 44–47. The
Specification also states “[e]xamples of highly graphitic carbonaceous
materials include natural graphites from various sources, as well as other
carbonaceous materials such as graphite prepared by chemical vapor
deposition, high temperature pyrolysis of polymers, or crystallization from
molten metal solutions and the like. Natural graphite is most preferred.”
Id. at col. 6, l. 65–col. 7, l. 4 (emphases added). Thus, through its proposed
construction, Patent Owner tries to include a preferred element from the
Specification into the claims. This is not permitted. “Where a
specification does not require a limitation, that limitation should not be
read from the specification into the claims.” Specialty Composites, 845
F.2d at 987.
Accordingly, we determine that the broadest reasonable
interpretation of the phrase “sheet of compressed particles of exfoliated
graphite” is not limited to natural graphite.
B. Asserted Grounds of Unpatentability
The Supreme Court has made clear that we apply “an expansive and
flexible approach” to the question of obviousness. KSR Int’l Co. v. Teleflex
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Inc., 550 U.S. 398, 415 (2007). Whether a patent claiming the combination
of prior art elements would have been obvious is determined by whether
the improvement is more than the predictable use of prior art elements
according to their established functions. Id. at 417. To reach this
conclusion, however, requires more than a mere showing that the prior art
includes separate references covering each separate limitation in a claim
under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352,
1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing
that a person of ordinary skill at the time of the invention would have
selected and combined those prior art elements in the normal course of
research and development to yield the claimed invention. Id. As the
Supreme Court recognized, in many cases a person of ordinary skill “will
be able to fit the teachings of multiple patents together like pieces of a
puzzle,” recognizing that a person of ordinary skill “is also a person of
ordinary creativity, not an automaton.” KSR, 550 U.S. at 420–21. Against
this general background, we consider the references, other evidence, and
arguments of the parties.
1. Obviousness Based on Norley, Tzeng ’520, and Mercuri
Petitioner asserts that claims 1, 4, 5, 10, 11, 14, 15, and 20 are
unpatentable under 35 U.S.C. § 103(a) based on Norley, Tzeng ’520, and
Mercuri. Petitioner asserts that the Norley Article “demonstrates that
Exfoliated Graphite
7
is useful as a heat shield”; Mercuri also “discloses the
use of Exfoliated Graphite for use in thermal shielding applications”; and
Tzeng ’520 discloses a CPEG sheet in contact with a heat source in an

7
Petitioner uses the term “Exfoliated Graphite” to refer to compressed
particles of exfoliated graphite (i.e., CPEG). See Pet. 1.
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electronic device. Pet. 22. According to Petitioner, based on the disclosures
of the cited references, it would have been obvious to a person of ordinary
skill in the relevant technology to make design choices to use the known
anisotropic properties of CPEG, disclosed in Norley, to channel heat in a
preferred direction to manage heat generated by electronic components, as
suggested by Tzeng ’520, and to provide effective thermal shielding, as
suggested by either Norley or Mercuri. Pet. 27–31.
Patent Owner takes a different view of the cited references. Patent
Owner asserts that Norley “in no way relates to thermal shields” (Redacted
PO Resp. 23); that Mercuri only “utilizes a CPEG sheet as a heat dissipater”
(id. at 29); that Tzeng ’520 “provides no motivation to use a CPEG sheet as
a thermal shield” (id. at 33); and that Shane “fails to remedy the deficiencies
of the references” (id. at 37). The basis of Patent Owner’s criticism of the
asserted references, as well as the background prior art disclosed in Shane, is
that the “distinction between a thermal dissipater and thermal shield is in no
way trivial. In fact, thermal dissipaters and thermal shields are essentially
polar opposites of one another.” Id. 1. Patent Owner also asserts that:
none of the references even remotely suggests the use of a
CPEG sheet as a thermal shield material, much less as an
apparatus that simultaneously dissipates heat from a heat
source while thermally shielding a second component or
external surface of the device from heat generated by a
heat source.
Id. at 5 (citing Ex. 2005 ¶¶ 26–31, 292).
Notwithstanding its criticism of Shane and the other references
disclosing an anisotropic graphite material, Patent Owner concedes that
Shane discloses “the anisotropic thermal properties of CPEG sheet,
indicating that ‘[i]t possesses either low or high thermal conductivity,
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dependent upon the orientation.” Redacted PO Resp. 37. Patent Owner also
concedes Shane discloses that, “in view of these materials’ anisotropic
properties, they can be employed as either a thermal conductor or a thermal
insulator.” Id. Dr. Culham, Patent Owner’s Declarant, agrees with Patent
Owner’s statements. Ex. 2005 ¶ 148.
Petitioner asserts that Patent Owner’s position overlooks the fact that
“because CPEG is highly anisotropic, it acts as both a heat dissipater and a
heat shield.” Reply 1. Petitioner also asserts that because Norley discloses a
CPEG material with a thermal anisotropy ratio of 52, it teaches that CPEG
conducts or dissipates heat in the in-plane direction and shields heat in the
through-plane direction. Id. at 1–2. Petitioner also asserts that the same
CPEG material disclosed in Tzeng ’520 is the CPEG material disclosed in
the ’874 patent, Shane, and recited in the challenged claims. Id. at 3–4.
Petitioner concludes that “if CPEG in the later ‘874 patent shields, then
CPEG in the earlier [Tzeng] ’520 patent and Norley also shields.” Id. at 4.
Based on the evidence of record, we agree with Petitioner.
a. Independent Claims 1 and 11
Independent claim 1 requires an electronic device having a heat
source, and a CPEG sheet, in contact with the heat source, and interposed
between the heat source and an external surface of the electronic device.
The stated function of the CPEG sheet is that it “thermally shields” the
external surface from heat generated by the heat source. As we have
construed the phrase “thermally shields,” it means any structure that protects
against heat. Thus, independent claim 1 requires a CPEG sheet in contact
with a heat source, wherein the CPEG sheet protects the external surface of
an electronic device from the heat generated by the heat source.
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Claim 11 recites that the electronic device includes a first component,
which is a heat source, and a second component. Claim 11 further recites
that the CPEG sheet is positioned such that one of its major surfaces is in
operative contact with the first component and “such that it [the CPEG
sheet] is interposed between the first component [the heat source] and the
second component.”
Thus, in claim 1 the CPEG sheet protects an external surface of the
electronic device, whereas in claim 11 the CPEG sheet protects a “second
component” of the electronic device.
Except for the preamble, neither independent claim 1 nor independent
claim 11 recites any structure or function relating to dissipating heat. These
claims require only that the CPEG sheet “thermally shields” or protects
against heat. The claims do not quantify the type or amount of protection
provided by the CPEG sheet.
The issue presented by the parties’ differing interpretation of the
references is whether anisotropic CPEG functions as a thermal shield. The
preponderance of the evidence establishes that it does.
As discussed above in our discussion of the references, Shane
discloses that the anisotropic properties of a CPEG sheet allow it to be used
simultaneously for dissipating or conducting the heat away from a heat
source and for protecting, insulating, or shielding elements from a heat
source.
Norley recognizes that anisotropic CPEG provides thermal engineers
the flexibility to channel heat in a preferred direction, and offers new design
options that can reduce thermal failures, that is, protect components from
heat, in electronic devices. Ex. 1021, 4.
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As discussed above, Tzeng ’520 discloses the use of CPEG sheets to
dissipate heat from microprocessors, integrated circuits, and other
sophisticated electronic components. Ex. 1004, col. 1, ll. 20–27, col. 5, ll.
23–34.
Patent Owner admits that “a CPEG sheet is employed in the
composite shielding devices of Mercuri.” Redacted PO Resp. 29 (emphasis
added). Patent Owner asserts, however, that Mercuri teaches that the CPEG
sheet material can be used as a heat dissipation device to spread heat from a
local hotspot over a larger area, which is fundamentally different than heat
shielding. As we noted above, the broadest reasonable interpretation of
thermal shielding, as required in claim 1, is simply protection from heat
generated by a heat source.
Petitioner asserts that a person having ordinary skill in the art would
have combined Norley and Tzeng ’520 and, as a matter of mere design
choice, used Exfoliated Graphite between two components in a laptop or
other electronic device. Pet. 32 (citing Ex. 1012 ¶¶ 41–45, 113–122).
Petitioner also asserts that the person having ordinary skill in the art would
have been motivated to position an Exfoliated Graphite sheet (as in the
Norley Article or Tzeng ’520 patent) between a heat source (first
component) and a heat-sensitive component (second component). Ex. 1012
¶ 41–44. Upon consideration of the evidence, we agree with Petitioner’s
contentions.
b. Claims 4, 5, 10, 14, 15, and 20
Dependent claims 4, 5, 14, and 15 recite specific thermal conductivity
values or a specific type of electronic component or device. The “in-plane
thermal conductivity of at least about 140 W/m°K,” called for in claims 4
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and 14 is disclosed in the Norley Article and Tzeng ’520, as asserted by
Petitioner. Pet. 33–34; Ex. 1021, 3; Ex. 1004, col. 4, ll. 24–38. Likewise,
both the Norley Article and Tzeng ’520 disclose “a through-plane thermal
conductivity of no greater than about 12 W/m°K,” as required by claims 5
and 15. Id.
Claim 10 limits claim 1 to require that the electronic device is a
“laptop computer” and the claimed “external surface of the electronic
device” is “a portion of a laptop computer case.” Ex. 1001, col. 17, ll. 6–8.
Claim 20 limits claim 11 to require that the first component (heat source)
comprises the hard drive of the laptop, and the second (protected)
component comprises the chipset of a laptop computer. Id. at col. 18, ll. 22–
25. Petitioner asserts that Norley discloses notebook computers, which
inherently have an external surface comprising a laptop computer case, as
well as a hard drive and chipset. Pet. 35 (citing Ex. 1021, 1; Ex. 1012
¶¶ 48–49). Petitioner asserts that a person of ordinary skill in the art would
have recognized the benefit of protecting the chipset from the heat generated
by the hard drive in accordance with the teachings of Tzeng ’520. Id. (citing
Ex. 1012 ¶ 49). Petitioner further asserts a skilled artisan would also have
understood that the CPEG disclosed in the Norley Article and Tzeng ’520
easily could be positioned to carry heat away from, and shield, the chipset.
Id. Patent Owner does not identify any heat dissipating or shielding
problems that are unique to laptop or notebook computers.
Based on the preponderance of the evidence, we are persuaded that
claims 1, 4, 5, 10, 11, 14, 15, and 20 would have been obvious based on the
cited evidence.
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2. Obviousness Based on Norley, Tzeng ’520, Mercuri, and Richey
Petitioner asserts that claims 2, 3, 8, 9, 12, 13, 18, and 19 would have
been obvious based on Norley, Tzeng ’520, and Mercuri, as applied and
discussed above, and also combined with Richey, U.S. Patent No. 6,131,651
(Ex. 1018).
Claim 2, depending from claim 1, and claim 12, depending from claim
11, each recite the same heat dissipation limitations—“a heat dissipation
device positioned in a location not directly adjacent to the first component
and further wherein one of the major surfaces of the thermal solution is in
operative contact with the heat dissipation device.”
As shown in Figure 1 below from the ’874 patent, one of the major
surfaces 10a or 10b of “thermal solution 10” (i.e., the CPEG sheet) is in
operative contact with a heat dissipation device 110, such as a heat sink, heat
pipe, or heat plate, which is positioned apart from first component 100. Ex.
1001, col. 14, ll. 40–43.

Fig. 1 of Ex. 1001 is a perspective view of a
CPEG sheet bridging a heat source and a heat sink.
Richey discloses a thin flexible heat transfer device for transferring
heat from a heat source to a heat sink, which may be located a substantial
distance apart from each other. Ex. 1018, Abstract. The heat transfer device
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includes a thin sheet of a non-structural, high thermal conductivity core
material consisting of pyrolytic graphite or highly ordered pyrolytic
graphite. Id. Figure 1 of Richey is shown below.

Fig. 1 of Ex. 1018 is a cross-sectional view of a heat transfer device shown
connected between a heat source and a heat sink.
As shown in Figure 1 above, Richey discloses heat transfer device 10
physically connected between heat source 2 and heat sink 3, which are
separated by a substantial distance and in areas not easily accessible. Heat
transfer device 10 is easily bent and shaped to be connected by any
conventional means, such as using a clamp or bolt or by welding or
soldering, for affixing heat transfer device 10 to the respective heat source 2
and heat sink 3. Ex. 1018, col. 3, ll. 49–56.
Petitioner asserts it would have been obvious to a person having
ordinary skill in the art, based on Richey’s teaching, to use the CPEG sheet
taught by the Norley Article and Tzeng ’520 to transfer heat from a heat
source to a heat sink placed at a convenient and useful location. Pet. 39–40.
According to Petitioner, a person having ordinary skill in the art would have
recognized the advantages of being able to place a heat sink at a location
away from the heat source based on the preferred configuration or aesthetic
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design of the laptop, as taught by Richey. Pet. 40 (citing Ex. 1012 ¶ 60).
Richey addresses the issues of cost to remove heat in space constrained areas
where thermal management by conduction requires a material that can be
easily configured to provide a low-density, flexible, thin cross-section for
the movement and redistribution of heat loads from heat-sensitive electronic
components. Ex. 1018, col 1, ll. 33–39, col. 3, ll. 49–52. Petitioner asserts
that a person having ordinary skill in the art would have been motivated to
use the teachings of Richey to use the Exfoliated Graphite sheets described
in the Norley Article and Tzeng ’520 to transfer heat from the heat source to
the heat sink. Id. (citing Ex. 1012 ¶ 61). Mr. Bagot opined that a person
having ordinary skill in the art would have been motivated, with a
reasonable expectation of success, to use the teachings of Richey to add a
heat sink to the laptop and then use a CPEG material to transfer heat from
the heat source to the heat sink. Ex. 1012 ¶ 61. Upon consideration of the
evidence, we agree with Mr. Bagot’s conclusions.
a. Claims 3 and 13
Regarding claims 3 and 13, which specify a “heat sink, a heat pipe,
[or] a heat plate” as a heat dissipation device, Richey discloses use of a heat
sink as a heat dissipation device. See, e.g., Ex. 1018, col. 3, ll. 49–51.
b. Claims 8 and 18
Claims 8 and 18 specify a “thermal transfer material” between the
CPEG sheet and the heat source. Richey discloses transfer device 10 that
consists of a non-structural, high thermal conductivity core material, such as
graphite, in the form of strip 12. Ex. 1018, col. 2, ll. 8–11. Strip 12 is sealed
or bonded between two opposing face sheets 13 and 14, preferably in the
form of foil strips. Id. at col. 2, ll. 11–13. The face or foil strips 13 and 14
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are composed from sheet metal of preferably high conductivity, such as
aluminum or copper. Id. at col. 2, ll. 40–43. Since the foil strips have high
thermal conductivity, we conclude they constitute a thermal transfer material
located between the CPEG sheet and heat source.
Petitioner asserts it would have been obvious to a person having skill
in the art to employ Richey’s foil strips 13 and 14 between the CPEG sheet
and the heat source disclosed in the Norley Article and the Tzeng ’520,
because the strips would provide a surface on which to attach the CPEG
sheet, rather than attaching the sheet directly to a hard drive (which may
later need to be replaced). Pet. 42 (citing Ex. 1012 ¶¶ 62–63). Petitioner
points out that Richey discloses using the foil strips to increase the ease of
handling of heat transfer device 10 independent of core material composition
12. Id. Based on the evidence of record, we agree with Petitioner’s
contentions as to claims 8 and 18.
c. Claims 9 and 19
Claim 9, depending from claim 8, and claim 19, depending from claim
18, each recite the same limitation—“wherein the thermal transfer material
comprises a metal or a thermal interface.” As explained above, Richey
discloses using aluminum or copper as a thermal transfer material.
Patent Owner asserts that “Richey fails to provide any suggestion or
other disclosure that would correct the cited deficiencies of the Norley
Article, Tzeng ‘520, and Mercuri.” Redacted PO Resp. 47. As discussed
above, however, we are persuaded the combination of Norley, Tzeng ’520,
and Mercuri does not have the “deficiencies” alleged by Patent Owner.
Based on the preponderance of the evidence, we are persuaded that
claims 2, 3, 8, 9, 12, 13, 18, and 19 would have been obvious based on the
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cited evidence.
3. Obviousness Based on Norley, Tzeng ’520, Mercuri,
and Tzeng ’076
Dependent claims 6 and 16 each recite that the CPEG sheet further
comprises a protective coating thereon.
Petitioner asserts that Tzeng ’076 discloses a protective coating, as
called for in claims 6 and 16. Tzeng ’076 relates to thermal management in
the design of electronic products because of the need for heat dissipation
from microelectronic devices used in these products. Ex. 1020 ¶ 3. Tzeng
’076 discloses a thermal interface capable of being mounted to the external
surface of a heat source, such as an electronic component, where the thermal
interface comprises an anisotropic flexible graphite sheet, with at least one
of the major surfaces of the graphite sheet having a protective coating
sufficient to inhibit flaking of the particles of graphite. Id. ¶¶ 0011, 0044.
Tzeng ’076 discloses that the protective coating may be any material
“sufficient to prevent the flaking of the graphite material and/or to
electrically isolate the graphite, such as a thermoplastic material like
polyethylene, a polyester or a polyimide.” Id. ¶ 0044. Petitioner asserts it
would have been obvious to combine the coating of Tzeng ’076 with the
Norley Article, Tzeng ’520, and Mercuri, because a person having ordinary
skill “would have been put in possession of the system of claims 6 and 16.”
Pet. 44. This conclusory statement provides no reasoning or analysis as to
why a skilled person would combine the references as proposed.
Petitioner, however, also asserts that a skilled person would be
motivated to combine the references because “they were all created by the
same company – Patent Owner – and because they are all directed to heat
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management in electronic devices.” Id. “[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The obviousness analysis,
however, need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ. Id.
Petitioner’s proposed rationale is consistent with Norley, which discloses
that CPEG provides thermal engineers with the ability to control the
anisotropy of these materials, the flexibility to channel heat in a preferred
direction, and new design options that can reduce thermal failures in
electronic devices. Ex. 1021, 4.
Based on the prior art, Petitioner’s rationale, and the inferences and
creative steps of a person of ordinary skill, we are satisfied that Petitioner
provides the requisite articulated reasoning with rationale underpinning to
support the proposed combination of references.
Patent Owner asserts that “Tzeng ’076 fails to provide any suggestion
or other disclosure that would correct the cited deficiencies of the Norley
Article, Tzeng ’520, and Mercuri.” Redacted PO Resp. 49. As we noted
above, the asserted combination of the Norley Article, Tzeng ’520, and
Mercuri does not have the “deficiencies” alleged by Patent Owner.
Based on the preponderance of the evidence, we are persuaded that
claims 6 and 16 would have been obvious based on the cited references.
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4. Obviousness Based on Norley, Tzeng ’520, Mercuri, Tzeng ’076,
and Kapton Website
Dependent claims 7 and 17 each require that “the protective coating
has a thermal conductivity less than the through-plane thermal conductivity
of the at least one sheet of compressed particles of exfoliated graphite.”
Neither claim 7 nor claim 17 states a numeric value of the through-plane
thermal conductivity of the CPEG sheet.
The Specification of the ’874 patent states that the protective coating
“can comprise any suitable material sufficient to prevent the flaking of the
graphite material and/or to electrically isolate the graphite, such as a
thermoplastic material like polyethylene, a polyester or a polyimide.” Ex.
1001, col. 15, ll. 39–43. The ’874 patent further explains that a “plastic”
protective coating has a thermal conductivity less than the through-plane
thermal conductivity of the at least one sheet of flexible graphite. Id. at
col. 5, ll. 53–57. The ’874 patent Specification identifies “Kapton polyimide
materials” as a suitable coating. Id. at col. 15, l. 61. Thus, based on the
Specification, Kapton, a material commercially available from Du Pont (see
Ex. 1001, col. 15, ll. 57–63) is a coating that meets the claim limitation in
claims 7 and 17.
Petitioner asserts that the Kapton Website discloses the protective
coating material called for in claims 7 and 17. Pet. 44–45; see Ex. 1017, 5.
Petitioner also asserts that the rationale for using the protective coating
material is provided by Tzeng ’076, which discloses the same protective
coating disclosed and called for in claims 7 and 17. Id.; see Ex. 1020 ¶¶
0044, 0050.
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Patent Owner argues that this ground of unpatentability should fail
“for the same reasons discussed in detail” for the first asserted ground of
unpatentability. We do not find this argument persuasive, for the reasons
discussed above.
Based on the preponderance of the evidence, we are persuaded that
claims 7 and 17 would have been obvious based on the cited references.
5. Objective Indicia of Non-obviousness
Objective criteria constitute independent evidence of non-
obviousness. Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1378 (Fed. Cir.
2013). However, as discussed below, the objective indicia argued in the
Redacted Patent Owner Response—industry praise (Redacted PO Resp. 53),
commercial success (id. at 54), failure of others (id. at 57), and copying (id.
at 58)—do not establish a nexus with the claimed subject matter.
a. Industry Praise
Patent Owner cites a number of awards it received as evidence of
industry praise for the invention. Redacted PO Resp. 54 (citing Ex. 2041–
2044). Exhibit 2041 is a 2004 award from R&D Magazine in which Patent
Owner was recognized for a Spreadershield for Reducing Hot Spots in
Consumer Electronic Devices. Ex. 2041, 3. Patent Owner does not,
however, show how this award relates to the specific features claimed in the
’874 patent.
Exhibit 2042 is a 2006 press release announcing that Frost & Sullivan
recognized Patent Owner with the “2005 Excellence in Technology Award
for its exceptional track record in providing industries with innovative
natural graphite-based solutions for thermal management.” Ex. 2042, 2.
This award recognizes the “Spreadershield(TM) natural graphite heat
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spreaders.” Id. at 1. Again, Patent Owner does not show how this award
relates to the specific features claimed in the ’874 patent.
Exhibit 2043 is an application brochure from the Ohio Department of
Development with information concerning the 2006 Governor’s Excellence
in Exporting Award. We have not been directed to anything in Exhibit 2043
that relates to the claimed invention. Exhibit 2044 is a 2006 news release
from the Office of the Governor of Ohio identifying “GrafTech
International, Ltd., Advanced Energy Technology Inc.” as one of “29 Ohio
companies and organizations [recognized] with the Governor’s Excellence
in Exporting Award.” Ex. 2044, 1. According to the news release, this
award “recognizes Ohio companies that have increased sales volume
through exports, increased Ohio-based employment as a direct result of
export activity, or developed and implemented a strategy to expand their
international sales.” Id. We have not been directed to anything in Exhibit
2044 that relates to the claimed invention.
Patent Owner asserts that this industry praise is “praise for the
invention claimed in the ’[874 Patent.” Redacted PO Resp. 54.
As discussed above, however, Patent Owner has not demonstrated a
specific nexus between these awards and the claimed subject matter.
b. Commercial Success
Patent Owner asserts that the “claimed thermal management systems
have been employed in cellular telephones, tablet devices, laptop computers,
and televisions in a manner that satisfies the limitations of Claims 1, 4, 5, 11,
14, and 15 of the ’874 Patent.” Redacted PO Resp. 55. These products
include Apple iPhones (id.; Ex. 2005 ¶ 245), Amazon Kindle Fire HD
(Redacted PO Resp. 55; Ex. 2005 ¶ 249), Sony Vaio P Laptop Computer
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(Ex. 2005 ¶ 253), and LG Curve OLED Television (id. ¶ 256). Dr. Culham
opines that the products he analyzed satisfy the limitations of at least one of
the challenged claims. See, e.g., Ex. 2005 ¶ 257 (“It is therefore my opinion
that this application of GrafTech CPEG sheet material in the LG Curve
television satisfies the limitations of Claim 1 of the ‘874 Patent.”).
The Declaration of Phillip Green, submitted by Patent Owner,
provides an analysis of commercial success. Mr. Green concludes that
“[p]roducts manufactured and sold by GrafTech that enable the use in
consumer electronic products of the systems embodied by the challenged
claims are commercially successful.” Ex. 2034 ¶ 9. Mr. Green’s opinion is
based, in part, on substantial sales of Patent Owner’s Spreadershield
products. Id. ¶ 34. The Declaration of Richard Feinberg, Ph.D., submitted
by Petitioner, disputes Mr. Green’s conclusions. Ex. 1035 ¶ 22.
Petitioner asserts that the evidence on which Patent Owner relies
“fails to show a nexus to alleged commercial success.” Reply 11.
In order to establish a proper nexus, the patent owner must offer proof
that the sales were a direct result of the unique characteristics of the claimed
invention—as opposed to other economic and commercial factors unrelated
to the quality of the patented subject matter. Microsoft v. Proxyconn, Inc.,
Case IPR2012-00026, slip op. at 4 (PTAB Mar. 8, 2013) (Paper 32). We
have considered Patent Owner’s evidence and arguments, but are not
persuaded that Patent Owner has established that the commercial success
claimed is a result of the claimed invention.
Based on the totality of the evidence, we are not persuaded that the
evidence concerning the commercial success of the devices identified by
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Patent Owner, or the commercial success of Patent Owner’s products in
these devices, establishes the requisite nexus.
c. Failure of Others
Patent Owner asserts that the “failure of others to arrive at the
invention of the challenged claims despite the availability of the material and
the desire for improved thermal management solutions is further evidence of
the nonobviousness of the challenged claims.” Redacted PO Resp. 58. In
Dr. Culham’s opinion, the “failure of others to utilize CPEG sheet material
as a simultaneous thermal spreader and thermal shield in portable electronic
devices suggests that the invention of the ‘874 Patent was not obvious to
persons of ordinary skill.” Ex. 2005 ¶ 262. We note that Tzeng ’520 and
Norley disclose a thermal management solution using CPEG sheet material
in an electronic device, contrary to Patent Owner’s assertions. We
determine that the evidence does not establish a failure of others.
d. Copying
Patent Owner asserts that Beichuan (a Hong Kong manufacturer of
flexible graphite sheets) and G&CS (a South Korean manufacturer of
flexible graphite sheets) have copied its flexible CPEG sheets, and those
sheets “are being marketed for use in thermal management systems
according to the [’874 patent].” Redacted PO Resp. 58 (citing Ex. 2005
¶¶ 267–274; Ex. 2049–2051). Dr. Culham opines that “[g]iven the
description of the properties these [copy] products possess, it is likely that
Beichuan's GTS product is a CPEG sheet product.” Ex. 2005 ¶ 271
(emphasis added). The challenged claims, however, do not cover a “CPEG
sheet product”; they are more limited.
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Dr. Culham makes a similar statement for the G&CS product, stating
it is a “natural graphite flake graphite sheet,” and is a “graphite sheet product
made of CPEG sheet material.” The challenged claims do not cover merely
a graphite sheet product made of CPEG sheet material. The challenged
claims cover a specific thermal dissipating and shielding system, including a
heat source.
Accordingly, we are not persuaded that there is sufficient evidence of
copying.
Thus, the objective evidence, considered with the other evidence in
this proceeding, does not tip the balance in favor of the Patent Owner. The
totality of the evidence on which we have relied persuades us that a
preponderance of the evidence establishes that the challenged claims are not
patentable.
III. MOTION TO EXCLUDE
Patent Owner has moved to exclude Exhibits 1017, 1036–1044, 1046–
1071, and 1073–1094 for failure to satisfy the requirements for relevance,
authentication, and/or hearsay. With few exceptions, the Federal Rules of
Evidence apply to inter partes proceedings. 37 C.F.R. § 42.62. The moving
party has the burden of proof to establish that it is entitled to the requested
relief. 37 C.F.R. §§ 42.20(c), 42.62(a).
We have considered the parties arguments and evidence and deny the
Motion to Exclude Exhibit 1017, and dismiss the Motion to Exclude as moot
with respect to the remaining exhibits.
The exhibits Patent Owner moves to exclude have not been relied
upon in our substantive analysis of the merits of this proceeding, except for
Exhibit 1017. Thus, in this inter partes review, we dismiss the Motion to
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Exclude as moot as to all such exhibits. We discuss below our denial of the
Motion with respect to Exhibit 1017.
Exhibit 1017 is an Affidavit from Christopher Butler stating that
Exhibit A attached to the Affidavit is a true and correct copy of a printout of
the Internet Archive’s records for the Exhibit A document. Exhibit A is a 2-
page document titled “Kapton Polyimide Film Specifications.”
Patent Owner asserts it is not relevant because it does not relate to
CPEG (Mot. Excl. 4); it is not authenticated by a “Laird declarant [who] has
personal knowledge of the actual and complete content of the Kapton
Website.” (id. at 5); and it is hearsay because the author of the content of the
Exhibit “did not make [the statements] while testifying in this IPR” and
because it is “offered by Laird to prove the truth of the assertions in the
statements” (id. at 6).
A. Relevance
Evidence is relevant if it has any “tendency to make the existence of
any fact that is of consequence to the determination of the action more
probable or less probable than it would be without the evidence.” Fed. R.
Evid. § 401. The Federal Circuit recognizes that there is a “low threshold
for relevancy.” OddzOn Products, Inc. v. Just Toys, Inc., 122 F. 3d 1396,
1407 (Fed. Cir. 1997). In the context of obviousness, two criteria are helpful
in determining whether prior art is analogous: (1) whether the art is from the
same field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. Wyers v. Master Lock Co., 616 F.3d 1231, 1237
(Fed. Cir. 2010).
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Exhibit 1017 relates to insulation films. Mr. Bagot explained the
Kapton Website’s relevance in his Declaration. Ex. 1012, ¶¶ 69–73.
The Supreme Court informs us that familiar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents or other prior art
references together “like pieces of a puzzle.” KSR, 550 U.S. at 420. The
idea that a person of ordinary skill would ignore Exhibit 1017 as irrelevant
because it does not specifically relate to CPEG claims is not persuasive.
B. Authentication
Exhibit 1017 was authenticated by Christopher Butler, who stated that
that it is a true and correct copy of a printout of the Internet Archive’s
records. The fact that “no [Petitioner] declarant has personal knowledge of
the actual and complete content of the Kapton Website,” as asserted by
Patent Owner, does not establish that it lacks authentication.
C. Hearsay
Patent Owner asserts Ex. 1017 is hearsay because the author did not
make the statements while testifying in this IPR, and because it is offered to
prove the truth of the assertions in the statements. Mot. Excl. 6.
Petitioner asserts that documentary evidence is not hearsay if it is not
offered to prove the truth of the matter asserted in the document. Resp. to
Mot. Excl. –8. A prior art document submitted as a printed publication
under 35 U.S.C. § 102(b) is offered simply as evidence of what it describes,
not for proving the truth of the matters addressed in the document, and thus
is not hearsay. EMC Corp. v. Personal Web Technologies, LLC, Case
IPR2013-00085, slip op. at 66 (Paper 73 May 15, 2014). See also Fed. R.
Evid. 801(c) 1997 Adv. Comm. Note (“If the significance of an offered
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statement lies solely in the fact that it was made, no issue is raised as to the
truth of anything asserted, and the statement is not hearsay.”).
Based on the analysis above, we are persuaded that Exhibit 1017 is
relevant and authenticated, and is not hearsay. Accordingly, we deny the
Motion to Exclude Exhibit 1017.
IV. CONCLUSION
Based on the evidence and arguments, Petitioner has demonstrated by
a preponderance of the evidence that claims 1–20 of the ’874 patent are
unpatentable under 35 U.S.C. § 103(a).
V. ORDER
In consideration of the foregoing, it is hereby
ORDERED that, based on Petitioner’s showing by a preponderance of
the evidence, claims 1–20 are unpatentable;
FURTHER ORDERED, that Petitioner’s Motion to Exclude is
DENIED with respect to Exhibit 1017, and DISMISSED with respect to all
other exhibits identified in the Motion.
This is a final decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.
A protective Order has been entered in this proceeding. Paper 28.
We remind the parties of the expectation that confidential information relied
upon in a decision to grant or deny a request to institute or identified in a
final written decision will be made public. Office Trial Practice Guide, 77
Fed. Reg. 48756, 48760 (Aug. 14, 2012). Confidential information that is
subject to a protective order ordinarily becomes public 45 days after denial
of a petition to institute or 45 after final judgment in a trial. A party seeking
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to maintain the confidentiality of the information may file a motion to
expunge the information from the record prior to the information becoming
public. 37 C.F.R. § 42.56.

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For PETITIONER:
Matthew Cutler
mcutler@hdp.com

Douglas Robinson
drobinson@hdp.com

Bryan Wheelock
bwheelock@hdp.com

For PATENT OWNER:
Erin Dunston
erin.dunston@bipc.com

Travis Bliss
travis.bliss@bipc.com